Instagram Trademark

In the last couple of hours (28 September 2016) Instagram through it’s German Lawyers have filed a trademark application for the word “gram” as an Instagram Trademark

You may recall a while ago there was a bit of a broo-ha-ha about Specsavers applying for a trademark in the UK for the trademark “Should’ve”?

Here was my post on it – Specsavers Should’ve Trademark

This was the Sunday Times bit on it (with mention for yours truly, and sure why not, though obviously I did say a lot more than the quote)

And a huge number of other media outlets also picked up on the story. Thanks for those of you who credited, and to those of you that didn’t, I say:

Anyway, if you thought ‘Should’ve’ in the UK made people mad, wait until you see the fuss likely to be stoked up when people find out that Instagram just applied for a trademark for the word ‘gram’

Yes they did.

See:

Instagram Trademark Application – Gram

Now to be fair, that’s a far more limited application than the Specsavers one. it’s limited to software, and quite specific software at that.

In case you didn’t click on the above link (don’t make me Boo Erns you again), Specsavers applied to have monopoly on the word “should’ve” for whole load of stuff, that is, not just glasses. We’re talking things like envelopes, accounting and auditing services, gift tags, this kind of nonsense.

At the time, I said that I thought one of the reasons Specsavers wouldn’t get their application across the line was because their application was drafted too broadly and would have to be narrowed down to get the trademark (although the initial signs are, crazily, that I may have been wrong about that).

Instagram/Facebook have been quite clever in applying for a more limited range of protection. It will be interesting to see how it pans out.

Back in 2013, there was a big fuss about this when Instagram changed its terms of use to prohibit third party apps using the name “Insta” or “Gram”, but changing your Terms and Conditions is one thing, a trademark is entirely another. If you’re in breach of somebody’s terms and conditions, proving it to be a breach of contract or some sort of actionable infringement very much depends on the circumstances. If you breach a trademark, well

1. That’s actionable just about everywhere
2. That’s a very big stick the threaten someone with
3. If you have very deep pockets (and I’m lead to believe Facebook have a few bob lying around) then you can afford to run these trademark infringement proceedings around the world until you put anyone you don’t like out of business, or force them to re-brand, and you could notionally do that a lot quicker in a lot of jurisdictions by seeking an order for security for costs. I’m not saying they would do that, I’m just saying it would notionally be possible. Sensationalising?? Me?? I beg your very pardon….

This follows from Instagram’s recent foray into the Trademark world to try and get trademarks for the word ‘INSTA’

A lot of those are still pending (or being opposed) but some have gotten through in various jurisdictions.

Anyway, about today’s “Gram” application – You can check out the full application here – https://euipo.europa.eu/eSearch/#details/trademarks/015868797

For what it’s worth All Instagram’s other EU Applications are as set out below:

You might have noticed that their ‘INSTA’ EU application has been opposed, but only actually by one party, which of itself is a bit surprising, by this Crowd, Energy Management Company “ISTA”– They are currently in a “cooling off” period (seriously that’s what it’s called) of the opposition process.

This is where both sides go away and have a good hard look at themselves. You said some things, I said some things, can’t we just hug it out……and you pay me a huge wad load of cash to stop opposing your application (ahem). Their opposition is filed in German, so I’m paraphrasing (guessing) that’s what the letters say, based on my own experience. I could be wrong.

Be Afraid, be very afraid!

Who should be worried?

Well Flipagram  and everybody on that page for a start, I would suggest, as the biggest potential target

Flipagram have registered “Flipagram” as a trademark in the US, Australia, China, Japanm Mexico and Russia. But their application was opposed (by guess who) in the EU.

If I was their lawyer, I would be looking up this person in France fairly lively and sending a flipagrammer on a plane to Clichy pronto – They have the trademark for Flipgram in France you see

Anybody with the word “gram” in their app/software title or website. All things like Jittergram or Luxogram or Postagram would be very exposed, I would think.

Finally, and while we’re at it, if they DO get the trademark, expect them to enforce it

At the moment, there are 27 cases in the EU alone where Instagram Have filed a notice of opposition against somebody else’s trademark application. And that’s just those that have applied for trademark protection, imagine how many cease and desist letters there must be out in the wild! What those lads need is to get rid of those German fellas and hire a Ninja to Karate Chop all those punks into place:

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So, will they get it??

Well, I don’t know, but, as we say in Ireland “Sure look it, it’s worth a shot”

There’s currently 378 EU trademark applications with the word “gram” in them in Class 9, which is the Class instagram is applying for, and here they all are:

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Some of them might object, and there’s probably also national applications of relevance.

So there you have it, everything (presumably) you ever wanted to know about Instgram and Trademarks but were afraid (or didn’t want) to ask.

Feel free to get in touch using any of the social media channels, email, or live chat below, and if you’re a media outlet emailing, can you mark it “Media Enquiry” so my email filter can pick it up and separate it from, you know, my REAL Ninja work

And remember, if you’ve got a trademark problem, if nobody else can help, and if you can find him, maybe you can hire the Trademark Ninja*

Trademark Ninja

*Particularly if you just got the A-Team reference.